Can we trademark a unique logo with a generic business name?

Thursday, 14 February 2013 | By Craig Yeung

We purchased an established business recently and want to trademark the business name.

The problem is that the same business name is used by a number of other businesses in the same trade in different suburbs/states, not only that we are all using very similar logos, to the point that it gives an outsider the illusion of franchise.

From what we could gather, some of these businesses did at one point belong to the same company, including our business, hence we all inherited the name and the logo; the rest of them are a bit copycat.

So my question is, if we design a distinctively different logo with the same business name, are we able to register it as trademark and without infringing other people's rights?

This one is a tricky one and again I have asked our resident trademark expert down the hall, Tim O’Callaghan, for assistance.

The answer to your question depends a lot on what the trademark is.

If it is the sort of trademark that describes the business and that is why other traders are using it, it will be difficult for you to claim any exclusive rights over that trademark, although it can be done in some circumstances.

For example, marks that directly describe the goods or services and which have been refused registration include “College of Law” for education and training services and “Cranberry Classic” for fruit juices.

For a trademark to be registrable it must distinguish your goods or services from those of any other person and it cannot be purely descriptive of the goods or services being offered.

When the trademark office, IP Australia, determines whether marks are capable of registration, they examine the mark against whether other traders, in the ordinary course of their business and without improper motive, are likely to want to use the same mark (or a very similar mark) for their own goods or services.

The exclusive rights given to a registered trademark owner means that that owner is the only one entitled to use that trademark for the goods and services in which it has claimed.

So if the trademark merely describes the goods and services and that one person has the exclusive right to use the descriptive name which other traders in the same industry would naturally wish to use, it creates an unfair monopoly.

If, on the other hand, the trademark is distinctive enough of your goods and services (as opposed to purely descriptive) and the previous owners of your business have used (but not registered) it for a long period of time, then that long period of use can be used as grounds for you to register the trademark and perhaps even to stop others from using or registering the trademark.

However, the other traders which have been using the same business name and very similar logos in other suburbs and states in Australia may also have a long period of use of the trademark and have equivalent if not greater claim to register the trademark.

You say that all the businesses used to belong to the one company so some clarity on the issue of trademark ownership may be gleaned from a sale of business contract, which may set out whether you were assigned the trademark in its entirety, given a licence to it for use in all of Australia or perhaps just in the state in which you are trading.

What you could do, as you suggest, is design a distinctive logo and register the new logo as a trademark.

This gives you exclusive rights to stop other people from using the artistic work in the logo, although you may not be able to stop others from using the words in the logo, depending on how descriptive those words are of the goods or services being offered.

Unfortunately, each case turns on the factual circumstances surrounding the exact trademark and the industry in which it is being applied.

Therefore, I suggest that you seek advice from a registered trademarks attorney before applying for trademark registration or investing resources into a rebranding of your business.

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